Color As a Trademark Under the Lanham Act: Confusion in the Circuits and the Need for Uniformity

FURTHER DEVELOPMENTS ON PREVIOUS SYMPOSIA COLOR AS A TRADEMARK UNDER THE LANHAM ACT: CONFUSION IN THE CIRCUITS AND THE NEED FOR UNIFORMITY J. CHRISTOPHER CARRAWAY* I INTRODUCTION The Spring 1949 issue of Law and Contemporary Problems, entitled Trade- Marks in Transition, focused on the recently enacted Trademark Act of 1946 (the "Lanham Act"),1 which established a federal substantive law of trademarks and unfair competition. At the outset, the Act promised a bold new future of unprecedented protection for any "word, name, symbol, or device, or any combination thereof" that distinguished goods in the marketplace.2 Trade-Marks in Transition, however, equally characterizes the current state of the Lanham Act. With the growing interplay among trademark, copyright, and patent law,3 and the expanding use of section 43(a) as a federal unfair competition provision, encouraged by the recent Supreme Court decision Two Pesos, Inc. v. Taco Cabana, Inc.,4 trademark law continues to evolve and mutate rapidly. In fact, the effect the Lanham Act has actually had over the past forty-eight years and its current importance could fill an entire multivolume treatise, and undoubtedly will be discussed at great length next year in various retrospective symposia devoted to the fiftieth anniversary of the Act's passage. In its short space, this note examines merely one small facet of how the Lanham Act remains in transition: the battle currently raging on whether the Act allows Copyright © 1995 by Law and Contemporary Problems * J.D. candidate, Duke University School of Law, 1995; B.S., Economics, The Wharton School, University of Pennsylvania, 1992. 1. 15 U.S.C. §§ 1051-1127 (1988). 2. Id. § 1127. 3. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989); Compco Corp. v. Day- Brite Lighting, Inc., 376 U.S. 234 (1964); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964). 4. 112 S. Ct. 2753 (1992). Unfair competition is the broad doctrine of which trademark law is merely a subset. Trade dress as a form of unfair competition under section 43(a) is discussed infra notes 105-09 and accompanying text. LAW AND CONTEMPORARY PROBLEMS [Vol. 57: No. 4 protection of color per se as a trademark.5 Since erupting onto the scene in 1986, the issue has continuously flared, as the United States Courts of Appeals for the Federal and Eighth Circuits have taken a flexible approach in contrast to the Seventh and Ninth Circuits' adhesion to a common law rule that categorically bars trademark protection of color per se. The United States Supreme Court has now granted a petition for writ of certiorari on the issue of whether the Lanham Act prohibits registration of color as a trademark, and will likely settle the circuit conflict.6 Part II of this article reviews the traditional rule and the subsequent conflicting circuit interpretations of the registrability of color per se. Part III analyzes the rationales offered by courts still supporting the traditional rule, and argues that such justifications are meritless in today's society under the Lanham Act. Finally, after finding that color per se is merely one trademark issue among many in conflict today, Part IV advocates transferring all appellate jurisdiction over Lanham Act registration and infringement cases to the Federal Circuit, which will ensure uniformity in the interpretation and application of the Lanham Act throughout the United States. II THE SPLIT IN THE CIRCUITS Trademarks indicate the origin of products7 and prevent confusion in the marketplace, thereby protecting the public's interest in obtaining only the goods it desires8 and the trademark owner's interest in securing the goodwill 5. "Color per se" means color alone or mere color. Trademark rights .incolor per se means that the color is not part of some other element, such as a logo, but is the distinguishing element in itself. Usually, a party seeks protection of color per se as product coloration, that is, the color uniformly applied to the product. Therefore, no other party would then be allowed to sell a product coated in the same color. 6. Qualitex Co. v. Jacobson Prods. Co., 115 S. Ct. 40 (Sept. 26, 1994) (No. 93-1577) (granting petition for writ of certiorari). 7. The trademark laws apply to both goods and services equally: Subject to the provisions relating to the registration of trade-marks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trade-marks, and when registered they shall be entitled to the protection in this chapter in the case of trade-marks. 15 U.S.C. § 1053 (1988). The definitions of "trademark" and "service mark" are almost identical. See id. § 1127. Therefore, in this note, whenever "products" are mentioned, one should assume that the law would be the same for services. Color trademarks have almost always identified products, as they usually have consisted of the overall product coloration. E.g., In re Owens Coming Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) (insulation); Qualitex Co. v. Jacobson Prods. Co., 21 U.S.P.Q.2d 1457 (C.D. Cal. 1991) (dry cleaning press pads), affid in part and rev'd in part, 13 F.3d 1297 (9th Cir.), cert. granted, 115 S. Ct. 40 (1994) (No. 93-1577). However, color trademarks can also be used to distinguish services. For example, Braniff Airlines painted some of its airplanes entirely in orange (earning them the nickname "flying pumpkins"). JOHN J. NANCE, SPLASH OF COLORS: THE SELF-DESTRUCrION OF BRANIFF INTERNATIONAL 105-18 (1984). This orange color applied to an airplane could distinguish its air transportation service and thus could be eligible for service mark protection. 8. Trademarks "protect the public so it may be confident that in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to Page 243: Autumn 19941 COLOR TRADEMARKS contained in the product's reputation.' The Lanham Act was the first significant statutory basis for trademark protection, which, before then, had been almost totally based on common law.'0 Section 45 of the Act defines a trademark as any word, name, symbol, or device, or any combination thereof- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." The Patent and Trademark Office (the "PTO") must register any mark that fits this definition, unless it falls within an enumerated exception. 2 The Act was intended to liberalize the traditional trademark laws so that they would conform to modern business practices. 3 The expansive language of section 45 made get." S. REP. No. 1333, 79th Cong., 2d Sess. 3 (1946), reprinted in 1946 U.S.C.C.A.N. 1274 [hereinafter LANHAM Acr SENATE REPORT]. By ensuring familiarity with products it has used, trademarks lower consumer search costs. William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & ECON. 265, 269 (1987) ("[A] trademark conveys information that allows the consumer to say to himself, 'I need not investigate the attributes of'the brand I am about to purchase because the trademark is a shorthand way of telling me that the attributes are the same as that of the brand I enjoyed earlier."'). Trademarks also benefit the public by encouraging quality control of goods: a mark may build up goodwill by denoting consistent quality in the public's minds, and any reduction of quality may destroy this accumulated value of the trademark. Id. at 270. 9. See United Drug Co. v. Rectanus Co., 248 U.S. 90, 97-98 (1918) ("[A trademark] is merely a convenient means for facilitating the protection of one's good-will in trade by placing a distinguishing mark or symbol-a commercial signature-upon the merchandise or the package in which it is sold."). 10. United States courts in the early nineteenth century apparently imported the English common law with respect to appropriation of trademarks, which had existed since approximately 1618. Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1332 (C.D. Cal. 1989) (discussing in substantial detail the evolution of trademarks from ancient Egypt through the Lanham Act and beyond). Former federal statutes governing trademarks included an 1870 act, Act of July 8, 1870, ch. 230, 16 Stat. 198, which the U.S. Supreme Court held unconstitutional as beyond Congress's commerce and copyright-patent power, in The Trade-Mark Cases, 100 U.S. 82 (1879), and a 1905 act, Act of Feb. 20, 1905, ch. 592, 33 Stat. 724, the predecessor of the Lanham Act, which protected only a very narrow class of trademarks. 11. 15 U.S.C. § 1127 (1988). 12. Id. § 1052 ("No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it [falls within one of the following five subsections]"); id § 1052(0 ("Except as expressly excluded in [subsections] (a)-(d) of this section, nothing in this chapter shall prevent registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce."). The specific exclusions to this registration mandate include (a) marks consisting of immoral, deceptive, or scandalous matter, or marks falsely suggesting a connection to or bringing disrepute to or bringing into contempt persons, institutions, beliefs, or national symbols; (b) marks comprising the flags or insignia of any governmental body; (c) marks including a name, portrait, or signature of any living person without his or her consent or of any deceased U.S.

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